MSubs Limited v MARLIN SUBMARINES / PAUL MOORHOUSE
Claim Number: FA1306001505078
Complainant is MSubs Limited (“Complainant”), represented by Austin Blackburn of Nash & Co. Solicitors LLP, United Kingdom. Respondent is MARLIN SUBMARINES / PAUL MOORHOUSE (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marlinsubs.com> and <msubsltd.com>, registered with Register.it S.p.A.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 17, 2013; the National Arbitration Forum received payment on June 17, 2013.
On June 18, 2013, Register.it S.p.A. confirmed by e-mail to the National Arbitration Forum that the <marlinsubs.com> and <msubsltd.com> domain names are registered with Register.it S.p.A. and that Respondent is the current registrant of the names. Register.it S.p.A. has verified that Respondent is bound by the Register.it S.p.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marlinsubs.com, postmaster@msubsltd.com. Also on June 25, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 12, 2013.
On July 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant MSubs Limited claims use of the MSUBS and MARLIN SUBMARINES marks in both the United Kingdom and the United States of America. Complainant contends that in 2007 it was vested with all rights that Respondent had in these marks upon the incorporation of Complainant,—without providing supporting documentation. Complainant operates a business in manufacturing and selling specialized submersible vessels. Complainant uses the <marlinsubmarines.com> and <marlinsubmarines.co.uk> domain names in furtherance of its business at the <msubs.com> domain name.
Respondent Marlin Submarines/Paul Moorhouse is a former director of Complainant. Respondent is the registrant of both of the <marlinsubs.com> and <msubsltd.com> domain names, and registered them on November 1, 2012. Both of the domain names are confusingly similar to Complainant’s marks.
Complainant contends Respondent lacks rights and legitimate interests in this domain name. Respondent was a director of Complainant from 2007 until he was removed on November 30, 2012. Respondent was responsible for Complainant’s intellectual property during his time as a director. Respondent’s use of Complainant’s own content in the websites of these domain names is evidence of an attempt to disrupt Complainant’s business.
Respondent is carrying on a competing business under these <marlinsubs.com> and <msubsltd.com> domain names. Much of the text on the disputed domain names’ websites has been copied from Complainant’s website. Thus Respondent not only competes with Complainant, it also passes itself off as Complainant. Respondent had actual knowledge of Complainant’s rights in these marks. Respondent left the Complainant-company on bad terms and with full knowledge of Complainant’s intellectual property and management thereof.
B. Respondent
Respondent asserts that Complainant has no rights to use either of these marks, and that they in fact belong to Respondent. Respondent provides various exhibits showing that he had customers for a long time, and has done business for many years, under these marks before Complainant was established. Respondent has gone by the name “Marlin Subs” and variations thereof since 1979. Respondent is known by these names in his business of selling submarines.
Respondent contends it has a legitimate interest in these <marlinsubs.com> and <msubsltd.com> domain names. Respondent has run a business using the MARLIN SUBS mark since 1979, has designed submarines since 1983, and has had numerous accounts over the years. Respondent claims that Complainant does not have exclusive use of the trademarks, and that it is Respondent who has the right to use these marks in trade. Respondent believes it has the rights to carry on his business as a submarine builder, just as he had done for decades prior to Complainant’s creation.
Respondent has done nothing wrong in continuing to use his marks in the manufacturing of submarines. Complainant is owned by Submergence Group LLC, and goes by that company’s name and does not go by either of Respondent’s marks. Respondent is merely using domain names that embody marks used by him in his business.
Having failed to establish facts sufficient for this dispute to be decided under the UDRP, the transfer request is denied.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Business Dispute Beyond the Scope of the UDRP
Complainant claims that Respondent was a former director of its company. Complainant states that its current board of directors is in a dispute as to the decision to remove Respondent from his position. Complainant claims that Respondent is seeking to continue on with the sale of submarines, but now independent of Complainant. Complainant alleges that it owns the MSUBS and MARLIN SUBMARINES by way of assignment from Respondent to Complainant. However, no supporting documentation is provided to evidence such an assignment.
Respondent denies that there was ever any assignment of the marks. Respondent claims that Complainant is a recent creation that he used to facilitate the development and sale of his long-running MSUBS and MARLIN SUBMARINES products. Respondent notes that it has also used entities such as “Marlin Engineering,” “Marlin Submersibles Ltd,” “Marlin Submarines Ltd,” and “Marlin Submarines (UK) ltd” and thus Complainant by no means has been an exclusive licensee or user of the marks. Respondent denies that Complainant could even potentially have the rights to these marks when Respondent has been the senior user of the relevant marks since 1979.
Respondent claims that he owns the disputed domain names as well as the <marlinsubs.com> and <marlinsubs.co.uk> domain names that Complainant alleges to own. Respondent claims he founded a company in 1979 that has since been known as “Marlin Engineering” and “Marlin Submarines.” Respondent claims that he is the “brand,” and that he and his MARLIN brands were an integral part to the establishment of Complainant. Respondent notes that he began his work in the United States, and had to move to the United Kingdom to work with Complainant. Respondent claims that his <marlinsubs.com> and <marlinsubs.co.uk> domain names were illegally transferred to Complainant. Respondent makes allegations concerning the “Submergence Group” and suggests that this entity is the true owner of Complainant. Respondent points out that Complainant fails to provide any evidence of an assignment of interest, or an agreement to that effect. Respondent argues that Complainant has no documents as to any non-compete contractual obligation. Respondent provides an array of written statements from various individuals within the military contracting and submarine industries, all attesting to the fact that it was Complainant that sought his talent for projects, and that Complainant is attempting to seize Respondent’s intellectual property.
In this instance, given the fact that UDRP arguments seem to play a secondary role in the complaint compared to allegations of the ongoing business issue, both parties concede and the Panel finds that this is a dispute between a company and its removed director. Thus, a proceeding under the UDRP is inappropriate. In Bracemart, LLC v. Drew Lima, FA 1494699 (Mar. 28, 2013), the panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” Because the question of whether the complainant or the respondent in the Bracemart case had rights in the domain name hinged on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See id.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) expresses similar reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated . . . So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains questions of contractual interpretation and corporate ownership, and thus falls outside the scope of the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
Complainant has failed to come forward with sufficient proof of ownership. Respondent asserts that Complainant has no rights to use either of these marks, and that they in fact belong to Respondent. Respondent provides various exhibits showing that at the very least he had customers for many years, and has done business for many years, under these marks before Complainant. Respondent rejects the contention made by Complainant that Respondent has assigned any rights to the MSUBS or MARLIN SUBMARINES marks to Complainant. Complainant has not adequately established it has rights in the MSUBS and MARLIN SUBMARINES marks, and Complainant has failed to meet its burden under Policy ¶ 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark). Having failed to come forward with sufficient proof of ownership the claim fails.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <marlinsubs.com> and <msubsltd.com> domain names REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: August 6, 2013
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